By Fernanda Quental and Gabriel Sacramento
The legalization of the consumption of cannabis and cannabis-derived products in such countries as Canada, Israel, Switzerland, and Uruguay—and several states in the United States—has led to the rapid development of a robust industry around such products. However, until now, Brazilian legislation has been conservative concerning the authorization of sales, production, and use of cannabis-derivative products. In fact, use of such products in any form is currently prohibited by law in Brazil, which categorizes such use as both civil and criminal offenses.
Despite Brazil’s restrictive position concerning the production and sale of cannabis-related products, it is now taking small steps towards the legalization of some aspects of the use and sale of cannabis products—putting the country in the center of discussions around this topic.
Recently, the President of the Supreme Court of Justice, Justice Dias Toffoli, admitted a writ of certiorari in the Court’s appellate jurisdiction to decide a case that involves the judicial review of the decriminalization of the possession of cannabis, limited to 25 grams of marijuana for citizens over 18 years old. The judgment session was originally scheduled for June 5, 2019. The session was postponed to November 2019 and is expected to be a landmark case on the matter.
While the discussions over Brazilian law seem to be moving towards a more permissive approach to the possession of drugs, including cannabis for personal consumption, the penalties for the production and sale of cannabis are still considerable (current penalties include up to 15 years of detention plus fines).
Article 28 of Brazilian Drug Law no.11.343/2006 states that the person who acquires, stores, carries, or transports for personal consumption drugs without authorization or in violation of the law shall be subject to penalties including warnings about the effects of drugs, community service, and/or mandatory attendance at educational courses.
The National Health Surveillance Agency (ANVISA) by its turn, is not against the use of marijuana for medical purposes. In 2015, ANVISA withdrew cannabidiol (commonly known as CBD) from a list of prohibited substances in Brazil and included it instead in a list of controlled substances, recognizing in an unprecedented way its therapeutic effect.
In a still challenging scenario for regulation of the consumption of marijuana in Brazil, the owners of intellectual property (IP) assets for products derived from cannabis may question whether it is possible to protect such assets—especially trademarks—in the country, considering the possibility of exporting medicine derived from cannabis, and given the increasing discussion of a possible regulation allowing regulated consumption of cannabis-related products.
In this sense, it is important to highlight that Brazil’s National Institute of Industrial Property (INPI) position is still unclear, since trademarks containing references to cannabis and its derivative substances are usually rejected on the basis of the provisions of Article 124, Section III of the Brazilian Industrial Property Law, which prohibits registrations as a trademark of signs that infringe morality and good manners. They are also rejected on the basis of Article 128, Section I, which requires that the title holders engage in a legitimate business activity in order to own a trademark registration in Brazil.
Thus, the rejection of cannabis-related trademarks based on absolute grounds reflects current interpretations on how the use of cannabis-derived products is forbidden by Brazilian law.
Despite the position of Brazilian lawmakers and, consequently, of the INPI, the refusal of trademark applications claiming protection for cannabis-related products is not a rule in Brazil. In fact, the INPI has granted registration for several trademarks covering medicines containing substances found in cannabis, such as tetrahydrocannabinol (commonly known as THC) and CBD.
The MEVATYL trademark, for example (Registration numbers 826332978 and 826332668, both dated September 11, 2007), is registered in Brazil in Classes 3 and 5, respectively, as a medicine composed of THC and CBD, indicated for the symptomatic treatment of moderate to severe spasticity related to multiple sclerosis.
Considering the legal prohibitions surrounding cannabis-related products in Brazil, the INPI’s decision to allow the MEVATYL trademark can be justified by the fact that GW Pharmaceuticals, the company that manufactures Mevatyl, did not specifically mention cannabis in the specification of goods, but instead claimed “pharmaceutical and veterinary preparations; health preparations for medical purposes” in Class 5. This is illustrative of how important it is to adopt an effective strategy for protecting trademarks of this nature in Brazil.
Most cannabis-related trademarks that have been allowed (such as the MEVATYL mark) do not expressly contain any reference to weed, hemp, or cannabis-derived substances, either in the mark itself or in the specification of goods.
However, a deeper analysis of the INPI database reveals registrations granted for marks such as CANABIDOL (Reg. no. 907775659) and ISODIOLEX THC FREE NON GMO GLUTEN FREE HEMP OIL (Reg. no. 840889844), both in Class 5, covering medicines for human use—which is, therefore, aligned with the ANVISA regulation to permit the import of cannabis-derived products for medical purposes.
The lack of a clear pattern reveals that the INPI is still learning how to deal with applications encompassing cannabis-derived products in the specification or references to cannabis as part of the verbal or figurative elements of a trademark.
Notwithstanding the INPI’s contradictory decisions, it is possible to conclude that registrations for trademarks covering cannabis-derived products may be admissible in Brazil depending on how registration is sought. However, to avoid refusals based on morality arguments, trademark applications must be strategically filed—for instance, by avoiding any explicit reference to cannabis-related words in the description of goods and services as well as any depiction of marijuana designs in the registered trademark.
Despite the conservative approach of Brazil’s new president, Jair Bolsonaro, the scenario for the decriminalization of marijuana possession in Brazil seems to be favorable, since three of the eleven Justices of the Supreme Court have already voted for the admissibility of possession of marijuana for personal use in a judgment session that will be continued in November 2019. The possible decriminalization would be a first step for Brazil to emerge in the future as a significant market for products derived from cannabis and a potential environment for the cultivation, production, and development of technologies for manufacturing cannabis products.
Considering the current growth of this economic sector and the future potential for a further relaxing of cannabis-related laws, interested companies should begin preparing from an IP perspective to take advantage of this growing industry.
Article published in INTA Bulletin, read here.